UDRP Does Not Apply To Bad Faith Domain Name Renewals - Part I

Mar 12, 2003 | From CircleID Legal Issues

By Philippe Rodhain

The purpose of the Uniform Dispute Resolution Policy, known as the
UDRP (hereafter the "Policy"), is to determine disputes relating to
the registration or acquisition of domain names in bad faith. To
succeed in a UDRP action (i.e. to obtain cancellation or transfer of
the disputed domain name) it is necessary for the party bringing the
complaint (the complainant) to show that (i) the disputed domain name
is identical with or confusingly similar to a trademark or service
mark in which the complainant has rights; (ii) the domain name holder
(known as the respondent) has no right or legitimate interest in
respect of the domain name; and (iii) the domain name was registered
and is being used in bad faith. Each of the aforesaid three elements
must be proved by the complainant to warrant relief.

A serious problem may arise for the complainant if the disputed
domain name had been registered in good faith, but was renewed and
was being used in bad faith. The cause of this problem lies in the
fact that the Policy speaks only in terms of "registration" and "use"
and not in terms of "maintaining" or "renewing" the domain name
registration. Furthermore, panels have always strictly maintained the
conjunctive requirements for the complainant to prove that the domain
name in issue had been registered and was being used in bad faith:

"It is clear from the legislative history that ICANN intended
that the complainant must establish not only bad faith registration,
but also bad faith use." (WIPO administrative panel decision of 14
January 2000, Case No. 99-0001, World Wrestling Federation
Entertainment, Inc. v. Michael Bosman).


Accordingly, how can the complainant satisfy the bad faith
requirement in such a context? Can the renewal of a domain name
registration made in bad faith convert a name originally registered
in good faith to a name registered in bad faith for the purpose of
the Policy?

A clue to the answer can be found in the Report of the World
Intellectual Property Organization (WIPO) Internet Domain Name
Process, which stresses that the Report was not intended to extend
the definition of abusive registration to include domain names
originally registered in good faith. Indeed, paragraph 197 of the
Report reads as follows:

"The WIPO Interim Report recommended that a time bar to the
bringing of claims in respect of domain names (for example, a bar on
claims where the domain name registration has been unchallenged for a
designated period of years) should not be introduced. It was
considered that such a measure would not take into account that the
underlying use of a domain name may evolve over time (with the
consequence that the use of a domain name may become infringing
through, for example, the offering for sale of goods of a different
sort to those previously offered on the website); that any related
intellectual property rights held by the domain name holder may
lapse; and that a time bar would in any event be undesirable in cases
of bad faith".


Read in conjunction with paragraph 198 of this report, it is clear
that the reference in paragraph 197 to "infringing" was intended to
apply to the wider category of trademark infringement, not to the
narrow category of abusive registration. The question whether domain
names registered in good faith can become infringing is outside the
scope of this inquiry.

The Policy, which was based on the above report, sets out examples of
behaviour that constitutes bad faith holding of a domain name:

* the disputed domain name was registered or was acquired
primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to the complainant or to a
competitor of that complainant, for valuable consideration in excess
of documented out-of-pocket costs directly related to the domain
name; or

* the disputed domain name was registered in order to prevent the
owner of the trademark or service mark from reflecting the mark in a
corresponding domain name, provided that the domain name holder has
engaged in a pattern of such conduct; or

* the disputed domain name was registered primarily for the
purpose of disrupting the business of a competitor; or

* by using the disputed domain name, the domain name holder has
intentionally attempted to attract, for commercial gain, Internet
users to the web site or other on-line location, by creating a
likelihood of confusion with the complainant's mark as to the source,
sponsorship, affiliation, or endorsement of its web site or location
or of a product or service on its web site or location.


All of these examples relate to the registration and/or use of a
domain name only. The Policy could have been drafted to address both
bad faith registration and renewal. It does not do so, referring only
to a registration having been obtained in bad faith.

Consequently, panels, who are bound to apply the Policy strictly,
have always refused to take into consideration the renewal of the
domain name registration in the process of making their decisions.

The second part of this article will discuss UDRP cases involving the
renewal of domain name registrations.